The Hopkins Case is Distinguishable And, Further, Is Bad Law BMW cites the district court decision in Hopkins Mfg. Corp. v. Cequent Performance Prod., Inc., 223 F. Supp. 3d 1194, 1203 (D. Kan. 2016). Preliminarily, the Hopkins case is distinguishable, because there is no evidence that the patentee in that case had filed a statutory disclaimer under 35 U.S.C. § 253, which finally and permanently terminated the challenged patents as a matter of law. Instead, the patentee plaintiff patentee relied upon a cancellation of claims that would be entered upon an adverse PTO decision.

See 35 U.S.C. §135(a); 35 U.S.C. §6; Petrie, 21 U.S.P.Q.2d (BNA) 2012; Guinn et al. v. Kopf, 96 F.3d 1419, 1421 (Fed. Cir. 1996) (holding that a voluntary disclaimer under 35 U.S.C. §253 does not divest the Board of jurisdiction or authority to reach a conclusion as to the properly declared § 135(a) interference); In re Gartside, 203 F.3d 1305, 1317 (Fed. Cir. 2000) (following Guinn and holding that withdrawal of party did not divest the Board of jurisdiction to decide the interference).

2007) (“The purpose of the terminal disclaimer is to prevent extension of the patent term for subject matter that would have been obvious over an earlier filed patent.”); 35 U.S.C. § 253. Because each of the patents-in-suit has the same specification, all references in this memorandum will be to the ‘895 patent specification.

Plaintiff is the assignee owner of the two Patents. On February 18, 2019, Plaintiff/patentee disclaimed all the claims of both Patents, pursuant to 35 U.S.C. § 253 and 37 C.F.R. 1.321(a).

1985). However, a patent may still issue in the face of a double patenting rejection if the applicant files a terminal disclaimer under 35 U.S.C. § 253, so that the second patent will expire contemporaneously with the first. Id at 894.

Obviously, that thought contemplates common ownership of the two patents, which remains 3 See, e.g., Manual of Patent Examining Procedure (“MPEP”) § 804.02; see also 35 U.S.C.A. § 253 (“[A]ny patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.”) Case: 1:12-cv-06286 Document #: 562 Filed: 07/03/13 Page 5 of 22 PageID #:16615 6 common throughout the life of the patents. . . . .

As noted in the MPEP, the basis for the USPTO’s terminal disclaimer practice is found in 35 U.S.C. § 253 and 37 CFR § 1.321.

Id. Case 4:10-cv-40124-FDS Document 16 Filed 09/01/10 Page 7 of 14 - 6 - During the course of the Section 146 action, 3V filed a statutory disclaimer pursuant to 35 U.S.C. § 253 disclaiming all of the claims in the issued patent and dedicating the entire right, title, and interest in the patent to the public. Id.

The entry of a terminal disclaimer prevents an application for an obvious variation of an existing patent from being used to extend the patent term of that existing patent by disclaiming any part of the patent term granted for the patent issuing from the application which extends beyond the term of the existing patent. See 35 U.S.C. § 253 and 37 C.F.R. § 1.321.